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Disclosure Grace Period Held to Cover Post-Filing ‘Whole of Contents’ Disclosures

22nd January 2018

In Rozenberg & Co Pty Ltd v Velin-Pharma A/S the Delegate held that a post-filing publication of the same applicant can be covered by the grace period provisions, and so could be disregarded for novelty and inventive step purposes as a ‘whole of contents’ prior art base document...

Velin’s Australian national phase application has an effective filing date of 10th September 2010, and claims priority from a European application made on 10th September 2009. Velin had also previously filed a closely related PCT application (which also entered Australian national phase) that was published on 21st October 2010. Rozenberg argued that the earlier PCT application qualified as prior art on a whole of contents basis since although it was published after the subsequent applications filing date it contained subject matter that could provide the basis for equivalent claims while having an earlier priority date. Further, it was argued that the 21st October 2010 publication of Velin’s earlier PCT application fell outside of the 12-month grace period available for disclosures by the applicant.

The pre-Raising the Bar patents legislation applied and the relevant grace period provisions were given by regulations 2.2(1A) and 2.3(1A). Regulation 2.2(1A) provided a grace period for publication or use of the invention within 12-months before the filing date of the complete application. Regulation 2.3(1A) provided a grace period of 12 months after the information was first made publicly available.

Prior to this decision these grace period provisions had been understood as each being restricted to a 12-month time frame. However, the Delegate held that each grace period could apply to disclosures over more than a 12-month period. In particular, regulation 2.2(1A) was interpreted as setting a start date but not a finish date such that the grace period starts 12-months before the filing date and can extend beyond the filing date. Similarly, regulation 2.3(1A) was interpreted as setting a final deadline, but not a start date such that the grace period can extend into the period before the information was first made publicly available.